DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
In response to the amendment received on 02/06/2026:
claims 1-2 are currently pending; and
all prior art grounds of rejection are maintained for at least the reasons as set forth herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 reciting “a fluoropolymer with an average particle diameter of 20-1000µm greater than 50-1000µm” is indefinite because the metes and bounds of the recitation is unclear. In one interpretation, if the average particle diameter is 20µm, this is not greater than 50µm. In another interpretation, the recitation can be 20µm greater than 50µm, which is 70µm. It is unclear which of these interpretations are meant for the recitation.
Examiner will treat the recitation as written, and suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 2 is rejected due to its dependency on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Unno et al. (JP 2012255052 A, with reference to the machine translation) (“Unno” hereinafter) in view of Kiuchi et al. (JP 2000256650 A, with reference to the machine translation) (“Kiuchi” hereinafter).
Regarding claim 1, Unno teaches a friction material used for a disc brake pad, which is manufactured by forming a non-asbestos-organic (NAO) friction material composition (see Unno at [0001] teaches the present disclosure relates to a non-asbestos friction material composition that is suitable for friction materials such as disc brake pads, see Unno at [0012] teaching the non-asbestos frictional material composition… is a frictional material composition) that contains
a binder (see Unno at [0012] teaching binder),
a fiber base (see Unno at [0012] teaching a fibrous base material),
an inorganic friction modifier (see Unno at [0012] teaching an inorganic filler, see Unno at [0017] teaching the inorganic filler is contained as a friction modifier),
an organic friction modifier (see Unno at [0012] teaching an organic filler, see Unno at [0015] teaching the organic filler is contained as a friction modifier), but
does not contain a copper component (see Unno at [0030] teaching when copper or copper alloy fibers are contained, the total copper content in the friction material composition must be in the range of 5 mass % or less in terms of elemental copper, in consideration of environmental friendliness). 5 mass% or less total copper content overlaps with 0 mass% (see MPEP 2144.05(I)),
a lubricant… a fluoropolymer particle (see Unno at [0034] teaching from the viewpoint of wear resistance, organic additives such as fluorine-based polymers such as PTFE (polytetrafluoroethylene) can be blended). Polytetrafluoroethylene (PTFE) is taken to meet the claimed lubricant based on specification at [0017]-[0018] disclosing the fluoropolymer particle… as the lubricant… wherein the fluoropolymer particle is the polytetrafluoroethylene (PTFE),
15-25 weight %, relative to the entire amount of the friction material composition, of a zirconium oxide with an average particle diameter of 1-8µm as the inorganic friction modifier (see Unno at [0021] teaching the non-asbestos frictional material composition… contains zirconium oxide, see Unno at [0023] teaching the content of zirconium oxide is preferably 2 to 41 mass %, see Unno at [0024] teaching the average particle size of zirconium oxide is preferably 1 to 7 µm) (see MPEP 2144.05(I)).
Unno does not explicitly teach “wherein the friction material composition contains 0.5-5 weight %, relative to the entire amount of the friction material composition, of a fluoropolymer particle with an average particle diameter of 20-1000µm greater than 50-1000µm as the lubricant”, and “wherein the zirconium oxide has an average particle diameter smaller than the fluoropolymer particle”.
Like Unno, Kiuchi teaches a frictional material composition appropriate for frictional materials such as a disc brake pad comprising binder, fiber base material, friction modifier and polytetrafluoroethylene (PTFE) (see Kiuchi at [0001] teaching friction material composition suitable for use as a friction material in disc brake pads, see Kiuchi at [0006] teaching the present disclosure relates to a friction material composition comprising a fibrous substance, a binder and a friction modifier, and further comprising 0.08 to 10.5% by weight of a fluororesin powder in the total composition, see Kiuchi at [0007] teaching the average particle size of the fluororesin powder is preferably 0.05 to 50 µm, and see Kiuchi at [0008] teaching examples of the fluororesin powder used in the present disclosure include tetrafluoroethylene (PTFE)). 0.08 to 10.5% by weight of a fluororesin powder (or tetrafluoroethylene (PTFE)) with an average particle size of 0.05 to 50 µm is taken to meet the claimed “wherein the friction material composition contains 0.5 - 5 weight %, relative to the entire amount of the friction material composition, of a fluoropolymer particle with an average particle diameter of 20-1000µm greater than 50-1000µm as the lubricant” (see MPEP 2144.05(I)).
Additionally, an average particle size of 0.05 to 50 µm of fluororesin powder (or tetrafluoroethylene (PTFE)) as taught by Kiuchi is higher than average particle size of zirconium oxide is preferably 1 to 7 µm as taught by Unno, thus meeting the claimed “wherein the zirconium oxide has an average particle diameter smaller than the fluoropolymer particle”.
Kiuchi also teaches the present disclosure provides a friction material composition suitable for use as a friction material that can reduce the generation and sound pressure of… noise when the absolute humidity is high or when the vehicle is parked overnight (see Kiuchi at [0005]).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
As such, one of ordinary skill in the art would appreciate that Kiuchi teaches 0.08 to 10.5% by weight of tetrafluoroethylene (PTFE) with an average particle size of 0.05 to 50 µm suitable in friction material composition that can reduce the generation and sound pressure of noise when the absolute humidity is high or when the vehicle is parked overnight, and seek those advantages by adding 0.08 to 10.5% by weight of tetrafluoroethylene (PTFE) with an average particle size of 0.05 to 50 µm as a lubricant in the frictional material composition as taught by Unno.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 0.08 to 10.5% by weight of tetrafluoroethylene (PTFE) with an average particle size of 0.05 to 50 µm as taught by Kiuchi in the frictional material composition as taught by Unno because it suitable in friction material composition, it can reduce the generation and sound pressure of noise when the absolute humidity is high or when the vehicle is parked overnight and there is a reasonable expectation of success that the amount and particle size of PTFE as taught by Kiuchi would be suitable.
Regarding claim 2, Unno in view of Kiuchi teaches the limitations as applied to claim 1 above, and Unno further teaches wherein the fluoropolymer particle is a polytetrafluoroethylene (PTFE) (see Unno at [0034] teaching from the viewpoint of wear resistance, organic additives such as fluorine-based polymers such as PTFE (polytetrafluoroethylene) can be blended).
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant discusses that Kiuchi contains no disclosure of fluoropolymer particles having an average particle diameter than 50 µm, and indeed its teaching is directed to fine powder… a person of ordinary skill would reasonably expect that moving away from Kiuchi’s fine powder regime into a coarse particle regime (>50 µm) would provide the same results for Kiuchi’s problem, nor does the applied art provide guidance that coarse PTFE particles would be suitable or desirable for use in the Unno composition… Office Action does not establish a reasonable expectation of success for the amended claim (see Applicant’s arguments at sections Kiuchi and the Present Invention, and Reasonable Expectation of Success).
Examiner acknowledges the arguments and respectfully notes that Kiuchi teaches the average particle size of the fluororesin powder is preferably 0.05 to 50 µm (see Kiuchi at [0007]), which overlaps with the claimed 50 µm (see MPEP 2144.05(I)). Kiuchi has reasonably met the limitations of the claimed fluoropolymer particle. As such, the rejection to independent claim 1 is maintained.
Applicant discusses that Unno is silent as to any PTFE particle-size selection and does not disclose selecting a coarse PTFE particle size greater than 50 µm… routine optimization would not lead one to the claimed values once Kiuchi is excluded by the amended particle-size limitation (see Applicant’s arguments at section Unno and the Present Invention).
Examiner acknowledges the arguments and respectfully notes that the rejection is based on Unno in view of Kiuchi, and Kiuchi teaches PTFE and PTFE particle-size. As outlined above, Kiuchi has reasonably met the limitations of the claimed fluoropolymer particle. As such, the rejection to independent claim 1 is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731